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In a* Patent Application of Date: Jan. 1,2010 

Applicants- Bednorzetal Docker YO987074US5 

Serial No. 1 08/479.810 Group Art Unit: 1751 

Filed: June 7. l°>95 Examiner" M Kopec 

Appeal No 2000-003320 


Mai! Stop: Appeal Brief- Patents 

Commissioner for Patents 

United States Patent and Trademark Office 

P.O. Box 1450 

Alexandria. VA 223 B- 1 450 

37 C.FJEl.§ 41.52 (a)(1) 


Decision on Appeal dated 09/17/2009 

Sir Please con si dot the following 

Pursuant to ?7 C M< <■> 4 1 51 <a)< 1 } appellants request leheanng of the 
Decision on Appeal dated <»° I" 2000 (Bo ()U i\ Decision) 

The Request hot Reheanng submitted on \o\ I" 20(H) shall he tetened 
to huem as the Initial Request oi the Initidl Request lot Reheanng The Supplement 
submitted on i2/l0/200o shall be icfeiied to as Supplement 1 oi the Supplement 1 
Request Ioj Reheating Ihe Supplement submitted on 12 ! 8/200^ shall be icletted to as 
Supplement 2 ot the Supplement 2 Request tot Reheauny and this papej shall he lefetted 
to as Supplement i ot the Supplement ^ Request fio Reheating 

Appeal No. 2009-003320 

Page 1 of 1 6 

Serial No.: 08/479,810 


The Initial Request at page 85, lines 1.-21, notes In re Wands states quoting from Ex 
parte Jackson: 

1 he deteumnahon of what constitutes undue 
expeninentatiun m a »nui case loquues the application of 
a standard of icasonableness, basing due icgard for the 
uaiuie of die m\ entjon and die state of die an Ansu) Co v 
Innoxai hu. |448 T 2d S72, 8~8-^, lo" I'SPQ ~™ 7tf>- 
0i(2dOi l l >71) ccit domed, 10 II S loiR 301 td 2d 
ooo 92 S Ct OSO(1072)J The test is no tmeieK 
quantitativ e since <i considerable amount of 
expet imc-nunon is permissible it* it is met el v routine, or if 
the specification in question piovules a seasonable amount 
of guidance vMth respect to the dneetion in which the 
expen mentation should pureed 

Intt Wl -\1 '* /^'ijej i f S-j 

This quote iiom in fi> Hands includes the following quotation from i v 
j'afte JiK /{son ' ftjhe test is not ntcich quantitative, since a considerable 
amount ol expeninentation is penmssshle d itismeieh unifine or if the 
specification in question pun ides a reasonable amount of guidance with 
tespect to the duectton m which the ex pei i mentation should proceed ' added. >j 

Thus In re Wands refers to Second Circuit Court of Appeals decision Amid Co. v. 
Vmroyai, Inc. 448 F 2d 872, 878-70, i69 USPQ 759 referred to herein as Aitsid. for 
which the United States Supreme Court denied certiorari, with approval. Amul supports 
Appellants* position and does not support the Boards' Decision 
Ansui states: 

The product involved in this case is an agricultural chemical 
commonly called "maleic hydraztde" (MH). It was discovered in 
1 §04, but was not considered useful until 1947 when two of 
Uniroyaf's employees found that, mixed with a wetting agent, it 
could inhibit the growth of certain plants without otherwise harming 
them. Uniroyai applied for a patent on the product in 1049: and in 
1952. the Patent Office issued it patent 916, which expired in 
October 1969. The two claims of that patent at issue here are claim 
1, the composition or product claim which describes the chemical 

Appeal No. 2009-003 2> 20 


Serial No. 08/479.810 

composition itself and claim 7, the method ui use chum which 
describes how the pioduet can he used to tseat Ceitam giowmg plants 
so as to aHei then mowth ehaiaetettsties 
\n\nl Ca.\A nmnA, Inc., 448 K.2H 8?2, 8'"5 < >d 1 sr. 

The patent at issue tn Jm»/ shah he lefened tu herein as the Jm«/ patent 

, \n\ul citing the district court decision states 

Maleie h\dia/ide was desutbed m the ptiot ait aseaiK as SS°4 Ail 
that I mrosai's chemssis dtd ui the Une l c) 40'i> was to add a wetting 
aeent, and accoiduitr to the dsstuct couit wetting agents and theu 
lunetjon were known long befoie that tunc The coutt stated that 
malcsc Indui/ide and t!te wertmg aucnt "west old elements well 
known to the pnoj ait" and that "in combination [maietc h\dia/ide| 
and a wetting agent each is h tinted to petfotmmg the same function 
which it always has pet formed independent of the other" the wetting 
agent "does not, howe\ ei mal e the | malcsc h\ dia^idej an\ mote 
active Thus it annpls perfoims the same funt-tion that it would 
perform if used with aiw other chemical so solution " >0I 1 Supp at 

VnsoU Q.x. 1 tnro\ai» inc.. 448 r.2d 872. S"6 UtK'ir. 1971) 

In Ansnt chums I and7midei re\iew aie 

• ( iami I deseubes the following composition "I An avmcultunil chemical 
composition computing matetiai of the gtoup eonsistmg of [malcie h\dra/tdef 
and its salts, .said composition containing a wetting at>ent " Vostij < o. \, 

j niroxaK Inc., 44£ r.2d 872, 8"6 i2d C sr. 1 9^1 > 

* Cktsm 7 is a use oi method claim, which reads " 1 he method which comprises 
Heating gt owing plants with matena! of the group consisting of [maluc 
hsdta/ide] and its salts m a coneentiation and amount sufficient to alfei the 
giowdi chvVactcnstics of said plants ' \»>>of ssnousk inc. 448 K2d 872, 
8/7<2<jC.«\ 1971) 

Claim 1 was found oh\ious since maleic hvdtazidc (MHU was a known composition 
and use of wetting agents was known pnoi to the invention of 4/>.sw/ claim i Claim I 
was found olruous h> the dhstfiet court since 'the mtxtuie of maietc h\dra/tde with a 
wetting agent claimed in claim 1, was met eh an aggregation of two old substances 
Appeal \o 2000-O(0:>20 Page 3 of \u Sena! No 08 470 8 1 0 

each performing its separate function, and hence was not patentable as a new 
product " Kn^iil Co. t. i'tiiro^aL 1hc» 44K F,2d S72. 8"? <2U Or. 19? h The circuit 
court agreed claim 1 was obvious since it was not directed to the function and use of 
the new composition, which is covered in claim 7, which was not alleged to be 
obvious by defendant Ansul Defendant Ansui alleged claim 7 was not enabled under 
35 US€ 112, second paragraph. 

This has similarity to the situation presented by the present appeal As stated in 
Appellants 7 Brief the initial claims presented for examination were composition of 
matter claims which, recited the high 7c property. As describe in BV1 and 
summarized in BV3, pages 4 -5, as the Examiner's Third Enablement Statement, 
theses claims were found not patentable for being anticipated since the high 
property was inherent in known prior art compositions, in response Appellants 
presented the apparatus, device, combination, structure, etc. claims under appeal in 
which high T ( . elements are used These claims were all initially rejected as not 
enabled, some being latter allowed by the Examiner and more being allowed by the 
Board's Decision. 

In Ansi// iht plaintiff asserted claim 7 against the defendants' use of claim 7 on 

tobacco plants. 

This is the Second Circuits analysis'. 

Plaintiffs contend that claim 7 is too general to meet 
these requirements [of .35 USC 1 12, first paragraph], i.e , 
that it does not define how to use the new composition with 
any exactitude, clarity, or distinctness. According to 
plaintiffs, the words of claim 7 "growing plants" could 
apply to any of half a million plants, and the patent 
discloses but a few paltry examples of experimentation 
with maieic hvdrazide on a single variety of tomatoes, com, 
peas, a. few weeds, and some grasses. Yet the patent 
proceeds to make claims encompassing the entire plant 
kingdom without distinguishing among the types. The 
result, say plaintiffs, is to invite those skilled in the art to 
engage in broad, extensive, and time-consuming 
experimentation in order to determine which plants are 
temporarily inhibited by \1H. which are killed, which 
remain unaffected or are even stimulated to mote growth, 

Appeal No. 2009-003320 

Page 4 of 16 

Serial No. 08/479..8I0 

and \\ hat conconnaJnm dosage rate sdlts and wolfing 
agents art tii be used to obtain specific k suits \ioreo\et 
piamtiifs argue, the leal utshh of MH - foi tobacco - is 
not dtsdosed 01 hinted at tn the patent and indeed v\as 
discovered b\ scientist* urn onnei ted with 
[ defendant 1 1 nirovai 

Plaintiffs also contend that the wouls aitci the mouth 
(JwdUemtKs" ,ne too broad since the\ could co\er 
growth promotion as v\ ell as inhibition and that the turn 
"salts" is likewise too bioad sim c it uneis an indefinite 
amount of compounds not ail of whidt aie opeiatne with 
the maieie Iruita/idc 

fudge Mansfield [the Pistua Court |udi;c j reiccied these 
contentions and we aaite Claim 7 was ne< tbwnK bsoad 
and uenuie because f niro\ai s discoxen "opened up a new 
att" and was "an entueh ntw use foi an txisttng 
composition" (301 k Supp. at 284-285), as distinguished 
from a minor improvement in a crowded art. As the district 
judge stated, "an inventor who discovers a basic new use is 
not required specifically to disclose, or even be aware of. 
all the uses of his invention." 301 F. Supp. at 290-291. See 
8.G. Corp v. Waiter Kidde & Co... 79 F.2d 20. 22 (2d Cir. 

We reject plaintiffs' argument that the words of the patent 
were insufficient to enable one skilled in the art to select 
and determine, out of countless possibilities, the particular 
concentration, dosage, etc. of MH that would produce the 
desired result on a particular plant . As Judge Mansfield 
stated, "the necessity for conducting experimentation or 
preliminary tests to determine the successful application of 
an invention * * * will, not invalidate a patent, provided one 
skilled in the art could determine and select the necessary 
experiments or tests without unreasonable difficulty." 301 
F. Supp. 285. See Georgia-Paci fie Corp v. U.S. Plywood 
Corp., 258 F.2d 124. .136 (2d Cir. ), cert denied, 358 U.S. 
884, 79 S Ct 124, 3 L. Ed. 2d 112 

Judge Mansfield found that the disclosures of claim 7 did 
not place such an unreasonable burden upon one skilled in 
the art. Me found that those skilled in the art in the late 
1940's already understood many factors that would limit 
greatly the number of experiments that would have to have 
been done. Then he stated. "The ultimate answer to Ansul's 

Appeal No. 2009-003320 

Page? of .16 

Serial No. 08/479.810 

contention lies in the testing conducted by research 
personnel to whom Uni royal furnished samples of the MM 
compound with disclosures as to its new use. With 
astonishing rapidity they used the new discovery and 
teachings in routine experiments, featuring routine 
screening techniques, to develop practical uses for the 
product. None of this would have occurred, of course, if it 
had not been for Uniroyai's disclosure of the basic secret 
with sufficient information for researchers to use the 
compound in their regular sampling procedures " 301 F. 
Supp. at 287- H;B. 

Indeed, the two chemists who discovered the usefulness of 
Mil on tobacco and onions were among these 
experimenters Thus, Judge Mansfield held that "in the face 
of such substantial evidence of the minor experimentation 
needed to perfect the use of the compound, once its generic 
use had been disclosed, * * * the specification of the 916 
patent reasonably 'enables any person skilled in the art to 
which it pertains, or with which it is most nearly connected, 
to make and use the same . . . , ! " 301 F. Supp. at 
288. [**14] 

For similar reasons. Judge Mansfield rejected plaintiffs' 
argument that the words "alter growth characteristics" were 
overbroad With respect to the alleged overbreadth of 
"salts," Judge Mansfield again found that "* * * the 
evidence amply indicated that those skilled in the art had no 
difficulty in relying on their skill to determine which salts 
of [maleic hydrazide] they should use. No substantial or 
difficult experimentation was required for this purpose; the 
specification served as an effective teacher and it was well 
known in the art that certain salts would be toxic or prevent 
absorption of the [rnaleie hydrazide] by the plant. 
Consequently, as to those to whom the patent was directed, 
the term 'salts' was not too broad." 301 F. Supp. at 289. 

We agree. Admittedly, the disclosures of claim 7 are veiy 
general and give meager information as to how to use the 
product. Yet the test is whether they are sufficient to enable 
a person skilled in the art to make and use the product 
without undue experimentation. The question whether the 
disclosures here were sufficient to do so is a factual matter 
and there is substantial evidence to support the trial court's 
findings. Indeed, the speed with which the two chemists 
used the Mi l composition successfully on tobacco and 

Appeal No. 2009-003320 

Page 6 of 16 

Serial No. 08/479.810 

unions once I nuo\al pumded then) with the composition 
and wtili the mfoi motion \h<ti it could inhibit the gsowih of 
plants, is cleat evidence that chum ""s diselosuies weie 

Vnsai ( t u, t'mr^al, inc., 4-18 F.2d S7>, fTi-Slv $2d 

This anaK sis 'will be tefeiied to as the \nsui Fuablement Statement and 
can be applied to \ppellams subsection Hi claims to find {hem enabled The 
\nsul Fnablement Statement finds the Ansa! Jaun 7 duected to ""glowing 
plants (.ouldappK to am ol Sulfa million plants and the [Ansui] patent 
discloses but a few paltrs examples of ex pes i mentation with tnaietc bxdrazide on 
a single \ aneix of tomatoes, com, peas, a few weeds, and some grasses" was 

Appellants make the following four observations about the Board's Decision 

I The Board's Decision at page 30. lines 4-9.. states in regards to 

Appel 1 ants" Specification : 

the Specification provides 23 pages of disclosure concerning these 
mixed transition metal oxides and their constituent elements (i.e , 
transition metals, rare earth and rare earth-like elements, and alkaline 
earths; but does not provide any disclosure at all of making high 
temperature superconductors from any other specifically identified 

2. Supplement 1 page 23, lines 16 -24, states: 

The Boatd's Decision has creak d a non~e\isknt per se rule ofiack 
of enablement Horn the < iencm^x h decision that stands foi the 
proposition that e\en if these are enabled species that come within 
ihe scope of a claim undei examination, the claim is not enabled, if 
the claim includes within its scope species for which the 
specification docs not expiiefth describe starting materials and 
stalling conditions, oen if those undisclosed stating materials and 
stalling conditions can be detet mined by loutme expenmauauon b\ 
pei sons ill ordinal \ skill in the ait fsom what is known to them to 
make such other species ( ienen>ecft announced no such per se rule 
This cannot be a coucct statement ot the law since it is well settled 
law that all species that tonto with tn the scope of a dajm do not 

Appeal \o 200^-003320 

Page7ol 10 Sena! No 08 470 810 

ha\e to be foreseen or hiown in ad\anee lot that chum tu be 
enabled The use and application of < h^hniwch b\ the Boaid to 
create the Board s created per se fuk to find the Subsection 111 
chums not enabled is an esror of law 

3 Supplement 1 page 44, hues o -14 states 

\Ko as |sic| stated akv* e the Boaufs Decision pi oxides no legal 
authonh for the statement that "a teasonahle amount of direction or 
guidance m ldcntifung the compositions m question a» possessing 
liteh temper atme super conducm e chat adenines is necessai v to 
satisU the enablement jequrietnem There ts no I ntted Mates 
1 cderal t oun decision that .states that "a reasonable amount of 
diieefioii ot guidance m identih uuf' species thai come [sk] vsithin 
the scope of a claim m necessan to satish the enablement 
re quit cment ot that claim to its full scope \s stared abo\ e it i s w el 1 
settled law that a patent applicant does not ha\ e to ibtesee m ad\ anee 
all species that come w ithm the scope oi a claim fos the claim to be 
enabled to its full scope, 

' "i he Board Decision tn the sentence bjidmnu page 21-22 states relet img to (u re 

hor teasons detailed below, the att of high tempeiatute 
supercoudnemm is general i\ unptedtctable tn that these rs geneialh 
no reasonable expectation of successtulb achieung high tetnpetature 
superconducti vi t v . 

AppK fng the four ohsei\ ( itions on the Boasd s Decision to the decision tn Ui^ul the 
tollowinsr observations ate made 
I if in Anvil 'a fe\s palm examples of e^ pet tmentatton with maletc h\dra/ide on a 
single \anet\ oftomauxs eotti peas, a fev\ v\eeds\ and some glasses" was 
sulTicient to satisfy, enablement for 5' ><\ 000 plant \ anebes, Appellants 2 ? pages of 
examples should be sufficient to find Appellants Subsection 111 elaims enabled in 
particular for Subsection 111 claims directed to ceramics ceramic like materials 
matenals with ceramic chaiactenstics, etc and-'oi tltat can be made In known 
principles or ceramic science. 

Appeal No. 2009-003320 

Page 8 of 16 

Serial No.: 08/479,810 

2, In Ansa/ there is no requirement to explicitly describe starting materials and starting 
conditions for the close to 500, 000 plant species that are not described in the 
specification under review inAmni. 

3, in .4m?// there is no requirement of a reasonable amount of direction or guidance in 
identifying the plant species in question whose growth characteristics will be altered 
and/or in what way they will be altered and if they will not be altered at aii . 

4, In Ansa I there is no requirement for Ansa I claim 7, which is directed to plants, 
generically recited, treated with a combination of chemical compounds. genetically 
recited, that there be a reasonable expectation of successfully achieving altered 
growth characteristics of the plant without experimentation to determine if there is 
such altered growth characteristics. This is the holding of Ansuf even though living 
things that are generally considered unpredictable and chemical compounds are 
generally considered unpredictable 

The (.otnl m 4t/sa/ (\'k\ not find mat the woid t ceiled m claim 7 1 aller the gjowth 
ch.naeiensties 1 and 'salts weie too hsoad resulting m dasm ~ being not enabled 'since 
u eoseied an indefinite amount oj compounds " Thus Appellants Snhscaj^n 111 claims 
aie not too broad to not be enabled 1 since | the\ | un ei an indefinite amount of 
compounds " In An^ul thete is no requirement that the starting conditions and stalling 
materials be described in the patent under tewew loi all the 1 indefinite amount of 
compounds" included w ithin the scope of Ai^ul claim ~ ( ottespondmgh thtee is no 
tequitenteitt that the shitting conditions and stalling mateiials he desenbed in 
Xppcliants' Specification tot all species that come within the scope of Appellants' 
Subsection III claims as iequued b\ the Board's Decision In Ansa/ there is no 
requirement thai thiec be a leasonabie expectation of successfulh achieving altered 
giowth chatactenstics ot the plant without C* pet imentatf on to deteimtne if these is such 
alteted growth characteristics o; that there be a reasonable expectation of successfulh 
de-hieMiig a salt that will it-suit ni the alteted growth chat ac ten sties without 
experimentation to determine which salts will wutk and which plants the method will 
w<nk on successfulh \s stated manv times in the piosecution of the ptesent 

Appeal \o 2000~OtO:>20 Page <> of \u Seiial No 08 470 8 1 0 

Application undei appeal thete is do e\ idencu that persons of ski!l m the :ui cannot 

make and test species that come within the scope of the Subsection Hi claims The 

Board's Decision patagtaph bridging pages "?1-^2 states 

\\\ ] do not agiee with Appellants that the mere capability to make 
and test compositions encompassed b\ the claims undei leuev* 
satisfies the enablement tequtiement Rather, enablement requires the 
Specification to teach those skilled m the ait Sum to make and use the 
fail scope of the- claimed mxention without undue e\ pen men tan on 
wheiesn it is the Specification, not the knowledge of one skilled in the 
art, that must siippis the novel aspects of an imeution m osdei to 
constitute adequate enablement Genentech, lt>XF id at H0S-I166 

T his language fiom fheBoatd s Decision isdnectls contiadicted hs the Second Cncutt 
comr of Appeals decision sn bisui I bus the Board's Decision is an cm>t of law 

hisiii states (see the \nsul Fnabiemem Statement) the District Couit judye 
' teiected [ \usul'sj contentious aud we agree Claim 7 was uecessdtih broad and 
geru ik because I 'mui\ al's discos, en 'opened up a new ait' and was an enttteh new use 
fot an e\tstmt> composition' as distinguished from a mmoi impros einent m a ciowded 

ait As the district )udge stated, v jan ii j i n\ i e i n ii tor iii n i h basic now use Js not 

required specificaih to disclose, or even be aware of, all the uses of his imeiHion. "" 
(Fmphasts added ) following the lational of the Second Cncutt Court of Appeals in 

1m/// Appellants" Subsection 111 claims are necessatth hoad and genenc because 
[Appellants'] discos esy opened up a new art' and was an entirely new use for an 
existing composition! and for other compositions that can be determined without 
ingenuits besond that possessed bs person* of oi dinars skill sn the ait]' as 
distinguished iiom a mmoi unptoxemeni in a crowded an As the distuct judge stated 

an inventor who discovers a basic new use is not lequiretl specificaih to disclose, or 
even be aware of» aii the uses of his invention. ' " Th e B oai d s Deci si on i t-qui t es 
Appellants' Specification to disclose the staitmg matenals and stutnva conditions foi all 
spectes that come within the scope of Appellants Subst-cUon Hi claims and requites that 
there be reasonable expectation of success ui knowing which species has the high l\ 
propei t\ befoie making and testing those species using known methods This is dtiecth 
i n conflict with the Second Ci rcuit court of Appeals i n Amu! and is thus an error of law. 

Appeal No. 2009-003320 

Page 10 of 16 

Serial No.: 08/479,810 

flic Second ( 'tri tttt Ansa] decision states (see (he Ansul Imahlement Stafemem) 

We reject plaintiffs' argumcm that the words of rhc patent were 
insufficient to enable one skilled m the art to select and determine, out 
of countless possibilities, tht* particular concentration, dosage, etc of 
MH thai would produce the desired result <>n a particular plant As 
Judge Mansfield .stated, "the necessity foi conducting experimentation 
or preliminary tests to determine the successful application of an 
invention * ^ " will not invalidate a patent piovided one .skilled in die 
art could determine and select the necessatv experiments ot tests 
without unreasonable difficulty " 

Applying this rational of the Second Circuit ( ourt of Appeals to the pit-sent appeal 
the Boaid's Decision is an euor of law hv finding that the words of the Appellants 
Specification is]insuffieient to enable one skilled in the art to select and determine, 
out of countless possibilities, the particular superconductor that would pioduce the 
desired high 1\ piopertv ' As Judge Mansfield stated in the district court decision 
in . instil which the Second Circuit Couit of Appeals adopted in its decision in Amttl 
. "the necessity for conducting experimentation or preliminary resrs to derermitie the 
successful application oi' <m invention * * '• will not invalidate a patent provided 
one skilled in the art could determine and select the neeessars experiments or tests 
without unreasonable difficulty " in the present Application on appeal there is no 
evidence to shovv that "one skilled in the art could jnot] determine and select the 
neeessai} experiments 01 tests without unreasonable dtfficttitv " to determine 
species that come within the scope of Appellants' Subsection !if claims outside of 
the scope that the Board's Decision has found enabled Thus there is no e\ idt-uce 
that Appellants' Specification is ' insufficient to enable one skilled in the ait to 
select and duermiru, oui of countless possibilities, the particular [superconducting 
materia! j that would pioduce the desired icsult ' of a having the '1< properh 
Since the Board's Decision found to the contrary, ii is in conflict with eh Second 
Circuit Court of Appeals" decision in . instil and is thus an error of law 

The Second Circuit Annul decision quoting the district court Amttl decision states (see 
the Ansul Enablement Statement); 

Appeal No. 2009-003320 

Page 1! of 16 

Seriai No.: 08/479,810 

" fhe ultimate attswei to \nsui's contention ites m the testing 
conducted bs reseaich peisiinnei to whom I nuo\ at furnished 
samples of the \il I compound with disclosures ( is to its new use 
\\ uh asromshmg iapuim thes used the new disco\ei\ and teach in us 
tn nuitine experiments, featuung mutine scieemng techniques, to 
develop piauical uses to; the pioduu None of this would ha\e 
oec uned, of course, il u bad not been lot t nuo\al's disclosure of the 
basic seeict with sufficient infoi matron to! fCscareheis to use the 
compound in theu legnhn sdmplmg procedures " 

In die present Application on appeal it is uncontested that once Appellants disclosed theu 
dtsexwets othei species wete tapidK made following appellants' teacluny which is 
e\ idettce that persons of skill m the ait \ now how to make and test species that come 
within the scope of the Subsection 111 claims outside die scope of what the Board's 
Decision has found enabled It is uncontested that these is no eMdenee to the eontsais 
The Poole i'>8S Lnabieinent Statement <B\ 3 pagcb) is e\ idcriee of this It states "the 
wideh used solid-state technique pen tuts oif~the~shelf chemicals to be duectK calcined 
into supci conductors, and it icquues little tamiliants with the subtle ph\ sawhemicaS 
process iu\ oh ed tn the transiotmatton of a mismie of compounds into a 
supeiCOiiducioi " '1 he v basse sea of disced cicd b\ Appellants is what thev were 
aw aided the l f >S7 Nobel Pnze m Ph\ sics for disco\eting as stated at the Nobe! Prize 
website {See initial Request page 4) 

No one knew this prior to Appellants" disco\ ery It is uncontested that only Appellants' 
teaching, in particular die teaching directed to known principles of ceramic science, is 
needed to make species that come within the scope of die Subsection 111 claims outside 
the scope of what the Board's Decision has found allowed. 

The Nobel Prize in Physics 1987 

Appeal No. 2009-003320 

Page 12 of 16 

Serial No.: 08/479,810 

1 he Second ( iicuit 1m/// decisnw quoting the distnct court, btwt decision siates (see 

the \nsul £ nablement Statement*) 

"in the face of Mich substantial evidence of the mmor experimentation 
needed to peifect the use of die compound, once tts genetic use had been 
dsscio.sed - % the specification of the °io patent i easorublv 'enables 
an\ peisna skilled iti the ait to 'which it pertains or with which it is most 
neaih connected, to make and use the same 

-\s stated above the Poole 1°8S I; nablement statement (B\ ? page") states 1 the 
wideh used solid-state technique ponuts off-the-shelf chemicals to be dnecth 
calcined into superconductors and it icqtmes little iaimlsaiuA with the subtle 
pb\ sieocbetuical process imohed in the tiaiisiounaiioi! of a iniviute of compounds 
into a supetconductot ' 1 hus m the present \ppheation undet appeal minimum 
cvpettmentation is needed to detennine and test othet species that come within the 
scope of Appellants Subsection III claims outside the scope of what the Board s 
Decision has found enabled. 

j he Second Cueurt mAmt/t atueed with the following sationa I oj the 
dihtnu court (see the Ansui fnahiement Statement.) 

[The District Com tj rejected piamttits' argument that the woids 
"altet growth characteristics" wete osubjoad With tespect to the 
alleged o\ethieadth of "salts " [3 he Distnct Court] agam that 
" s " ■* the evidence anipK indicated that those skilled m the art had 
no dfiTicuiU m tehing on their skill to deteumne which salts of 
[maleic Indra.'idej the\ should use No substantial ot difficult 
experimentation was sequited for this pus pose the specification 
seised as an effectixe teacher and it was well known m the an thai 
certain sdits would he U> ic or pte\ent absoiption of the jmaieie 
h\ didzide | b\ the plant ( on sequent! \ . as to those to whom the 
patent was dticcted the tetm 'salts' was not too hi oad " 

Xpphiiig this rational to the Subsection III claims on appeal hete Appellants' 
Subsection Mi claims are not o\ erbroad VppeliantV c\ idence amph indicates 
that those skilled m the art had and ha\e no difficult in relung on then skill to 
determine which other materials are high K supei conductor The Board's 
Decision shows no exnlence of substantial or difficult e\perrmentatum is 

Appeal \o 2000~0(0:>20 

Page 1 3 oi. 1 6 Set tal \o 08 4"9 8 1 0 

icquued ioi this put pose \ppullants' Specification set\es as an eilectixe 
tt'achor and it is well known in the 3ft that how to make and test specses that 
come wtthtn the scope of the Subsection 111 claims but outside of the scope that 
the BoaicTs Decision ha» found enabled i hits the Boaid's Decision is an enoi 
of law 

The Second (. trcuit in Ansnt concludes (see the Ansui Fnabiement 

\\ e agtce Aclnnttedh , die disciosutes exclaim ~ ate \ et\ general 
and give nieages tnfot matiofi as to how to use the pioduu. et the 
test is whether ihe\ ait* sufficient to enable a peison shiled in the 
ait to make and use the pioduct without undue experimentation 
The question whcthei the disclosures heie weie sufficient to do so 
is a factual matter and there is substantial eMclente to siippott the 
trial court's findings Indeed the speed with which the two 
chemists used the Mil composition snccessluih on tobacco and 
onions once rmio\al provided them with the composition and 
with the tnfoimation that it could inhibit the giowth of plants, is 
deal e\ science that claim 7's disclosures woe snifictent 

As m \n\ul in the piesent application {here is substantial e\ tdence that e\ en though 
\ppe!himV Subsection iff claims ate ven genet al and Appellants specific 21 pages of 
embodiments are directed to the Subsection if claims, \ppellants teaching is sufficient 
tii enable a peison skilled in the <ttt to make and use the Subsection III claims without 
undue experimentation I he speed with which otheis made othei speues is deai 
e\ tdence of tins which is because as stated b\ the Pool WSS f nablemetit Statement ( R\ i 
pagefO the widels used solid-state technique peuuits oil cheimcaK to be 
dsrecth calcined into supeiconductots, and it requues little famifiaim with the subtle 
ph\ sieochemfcal process m\ oh ed in the transibtmatton of a mi Mure of compounds into a 
superconductor * 'lestiugfoi supeicouduettvm has been know since the disco\ en of 
supefcondiictiMt\ in I ° 1 1 {See BY 1 paiagiaph bitdgtng pages 126-127} Iheieisno 
eudenee to the contrarx 

As stated abo\ e in Ansnt 'maieie Irvdta/ide* f Mil) was discovered tn 1 1 but 
was not considesed useful until W7 when two of Inno\ al's etnplos ees lound that, 
mued with a wetting agent it could inhibit the gunuh of certain plants without otheiwtse 

Appeal \o 2000~<KO:> 20 Page 14 oil ft Seital \o 08 4"9 8I0 

Siaitmn^ tlit*m (See the \nstsl [ nabiemetit Statement ) Appellants note that \>isal 
claim 1 e\piiutk iccitcs a wertmg agent, " but 'UimJ claim " does not Claim " was 
found enabled without recumg a wetting agent, which when nmed with Mil ft had the 
desued piopeits of inhibiting plant uiowth which means that claim ~i includes withm its 
$c<ipe an mdetei rmnate number of netting agents and was found enabled There is no 
reqimement that the staittma materials and starting conditions to make all the 
induct inmate nnmbei of wetting agents be specified m the Ansnt patent and theie was no 
lequtjement that theie he a seasonable evpeetation that a paiticuiat wetting aeent would 
when combined with MH. ha\e this desired piopett\ before expetimentalb dcteinntnny 
if it did hd\L the desued propem It was not ne^essan for the lusiii patent to identfh 
the wetting agents and salts m question when combined with MH as possessing this 
desued proper t\ The Board s Decision if applied to situation of J/n/// ! would find 
4fiMtI claim " iK>t enabled 1 hits the Boaid Decision is in conflict with and is an 
error of law 


Foi the seasons gi\en in the Initidl Request for Reheating. Supplement 1. 
Supplement 2 and this Supplement 3. Appellants request the !U>ait to sexerse the i eject) on 
of the Subsection 111 claims found not enabled in the Final Action and for which the 
Boaid's Decisions did not reverse the Bxaminer\s rejections, in particular for those claims 
t coking that the superconduoti\ c element cat) be made bv know piinetpies of eeiamtc 
science andoi be a ceramic, cetamic like material or having a ceiatmc characteristic, etc 
as identified in the Initial Request tor Rehearing 

Please charge any fee .necessary to enter this paper and any previous paper to 
deposit account 09-0468. 

Re spec tf ul 1 y su b mi tted , 

Appeal No. 2009-003320 

Page 15 of 16 

Serial No.: 08/479,810 

/Daniel. P .Morris/ 

Dr. Daniel P. Morris, Esq. 

Reg. No. 32,053 

Intellectual Property Law Dept. 
P.O. Box 218 

York-town Heights, New York 10598 

Appea! No. 2009-003320 

Page 16 of 16 

Sena! No.: 08/479,810